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Trademarks
The SC held:
Don’ts of IP Licensing
Held:
1. Under Sec. 37 of TM Law (and now Sec. 165 of IP
Code), trade names are protected against
subsequent use by a third party in a manner likely
to mislead the public.
2. Sec. 18 of Corp. Code also protects the registered
corporate names of Rolex companies in the Phils. A
corporation’s right to use its corporate name is a
property right, which it may protect against the
whole world.
3. The ROLEX name and mark is known worldwide
as a leading brand or name for timepieces. It is a
world famous mark.
4. Respondent’s argument that confusion is not likely
is unacceptable because “what is sought to be
protected is not the product alone, but the trade
name itself of petitioner.
5. The protection to which the prior user of a
corporate name is entitled is not limited to guarding
its goods or business from actual market competition
with identical or similar products of the parties but
extends to all cases in which the use of the junior
appropriator of the name is likely to lead to confusion
as to source, as where prospective purchasers would
be misled into thinking that the complaining
corporation has extended its business into the field, or
is in any way connected with the activities of the
infringer; or when it forestalls the normal expansion
of its business.
Some Marks are in a Class Above all the Rest
If you have not heard of Intel, you
don’t belong to this century !!!
Everybody Loves Microsoft!!!
You can’t live without it!!!
Why it is given special treatment
Tests of Strength
• Strength refers to the distinctiveness of the
mark
•Fanciful-suggestive-descriptive continuum is
often used to determine strength or weakness
of marks
•It is a question of consumer recognition
•It is not determined by the value of the goods
on which it is used
…and the more users there are, the less
distinctive it is
Types of Marks
•Arbitrarily arranged letters given wide
protection
because they are difficult to remember
•An alphanumeric telephone number may be used
a trademark, but if it includes a generic term,
composite mark can be descriptive and may be
protected only upon proof of secondary meaning
•But numbers used to indicate size, capacity,
model or style are not used as trademarks
•Abbreviations and nicknames may function as
marks, e.g., COKE for Coca-Cola, BUD for
Budweiser
•Slogans can serve as marks, e.g.. Where There’s
Life… There’s Bud, but not Soil It-Wash it-
Never-Needs Pressing for apparel
If it is ornamental, keep it as a house decor